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Monday, 26 November 2012

Last week the General Court of the Court of Justice of the European Union (CJEU) delivered a troika of trade mark judgments, but this Kat thought she would draw attention to one in particular, which generally led her to ask just how bilingual, or even multilingual, the institutions of the EU (well, the General Court and European Commission) consider the relevant EU public to be? The answer is...not so much.

The issue in Case T-589/11 Phonebook of the World v OHIM, delivered on 20th November, was whether the relevant EU public, outside Italy, would make a connection between the Italian expression ‘pagine gialle’ and equivalent expressions in other languages of the EU. The intervener, Seat Pagine Gialle SpA, was granted registration of the word sign PAGINE GIALLE in classes 16 ('printed matter of all kinds, including books, magazines, yearbooks, catalogues, telephone directories') and 35 ('advertising and business services') on the ground that the sign had become distinctive through use in Italy for the purposes of article 7(3), Regulation (EC) No 207/2009. Phonebook of the World did not dispute that the mark had become distinctive through use in Italy, but sought a declaration of invalidity on the ground that the word sign PAGINE GIALLE is a translation of the words 'yellow pages', commonly used to designate business telephone directories throughout the EU. As a result, Phonebook submitted, the mark was registered in in breach of article 7(1)(c) and (d) as the mark lacked distinctive character, was descriptive and had become customary throughout the EU, with the exception of Italy.

Action dismissed. The Court found:

The only specific evidence adduced by Phonebook to show the relevant public's knowledge of Italian (a table indicating that over 200,000 French pupils student Italian each year between 1997 and 2007) was inadmissible on the ground that it was produced for the first time before the court. Further, the Board of Appeal's reliance on an undisputed survey (Eurobarometer), conducted by the European Commission in 2006, in no way identified Italian as one of the second languages generally known by the relevant European public. As such, the Board of Appeal was fully entitled to conclude 'that Italian is not one of the foreign languages with which almost all the relevant public would be wholly familiar' (at [36]);

In WEISSE SEITEN, the General Court held that the German expression 'weisse Seiten' ('white pages') could not be registered for telephone directories for private individuals because it had become customary as a generic term for those directories. However, that case was distinguished on the grounds that the expressions under dispute in the two cases belonged to two different languages, the relevant public was different and, the proprietor of the mark WEISSE SEITEN had not claimed that the sign had become distinctive through use. As such, the considerations taken into account could not form the basis of the decision in the present case;

The numerous references made by the applicant to official texts, historical texts and to websites were irrelevant as they referred to the use of the expression 'yellow pages' in the official language of the States concerned and as such gave no indication as to the understanding of those terms in other languages.

Cat language

Therefore, the Board of Appeal did not err in finding that the relevant public was not able to understand the Italian expression 'pagine gialle' as a description or a customary name of the goods and services concerned. On the contrary, the relevant public was likely to see it as a fanciful expression with a distinctive character [like a sugar plum fairy?].

This Kat wasn't too sure about the evidence led in this case. Surely within the context of globalisation and the world wide web, the evidential value of a survey taken six years ago, with data dating back seven years, has diminished to a certain extent? There must have been an increase in the instances of multilingualism in the EU? Apparently not. The Commission's most recent Eurobarometer 'Europeans and their Languages', published in June this year, based on results compiled in Spring, appears to show that although multilingualism in itself is seen in a positive light by Europeans, the actually instances of its occurrence have barely increased in the last six years. She suspects that Italian remains in 6th or 7th position of languages most spoken or learnt because the non-Italian speaking EU public waiting at Italian train stations like to image public service announcers making declarations of love rather than lost property or delay broadcasts.

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